中亚牌至宝三鞭酒

中亚牌至宝三鞭酒 A Trade Mark Removal Case 中亞牌至寶三鞭酒 Zhong Ya Brand TZEPAO SANPIEN Wine" (March 2003) Fact: The Applicants (for removal) is the manufacturer of the Chinese medicinal wines bearing the mark "中亞牌至寶三鞭酒". The main contention of the Applicant is that it is the true proprietor of the goodwill in the suit marks so that the registration thereof by the registered Proprietor was in fraud of its rights in the suit marks and the use of the suit marks by the Registered Proprietor would be likely to deceive or would be disentitled to protection in a court of justice. Citing a number of legal authorities, the Applicant's Counsel contended that two main factors must be considered, namely, who is in fact most responsible for the character or quality of the goods, and, who is perceived by the public as being responsible. If consideration of these factors does not yield a result, the presumption is that the goodwill belongs to the manufacturer. A subsidiary and alternative ground relied upon by the Applicant is that as the relevant wine exported by the Registered Proprietor to Hong Kong has, throughout the years since it was first introduced in 1968, always been produced by the Applicant, the use of the marks by the Registered Proprietor on wine produced from a different producer would be likely to deceive or cause confusion. After considering the evidence of the parties, the hearing officer decided that:- (a) It is settled law that the exporter or dealer does not establish proprietorship to the trade mark by showing only that purchasers look to it as the sole supplier of the goods. However, in this case, the Registered Proprietor was in fact not merely the sole supplier of the Zhong Ya Brand TZEPAO SANPIEN Wine (中亞牌至寶三鞭酒) from China to Hong Kong. As at the relevant dates, there was a joint venture between the Applicant and the Registered Proprietor for the production, marketing and sale of the Zhong Ya Brand TZEPAO SANPIEN Wine (中亞牌至寶三鞭酒). Both the Applicant and the Registered Proprietor were in fact responsible for the character or quality of the wine. As to the marketing and sale of the medicinal wine, there was an agreement between the parties that while the Applicant had the China internal sales market, the Registered Proprietor was in charge of the overseas market. The Registered Proprietor exported the Zhone Ya Brand TZEPAO SANPIEN Wine (中 亞牌至寶三鞭酒) to Hong Kong for sale and appointed Lee Yuen Cheung Co. Ltd. (利源長有限公司) as the sole distributor of the medicinal wine in Hong Kong as early as from 1972 as shown by the evidence. The supply of the packaging materials for the wine including the packaging box and the wine labels bearing the suit marks were all managed and controlled by the Registered Proprietor. The Registered Proprietor had used the suit marks in Hong Kong by way of the sale of the Zhong Ya Brand TZEPAO SANPIEN Wine (中 亞牌至寶三鞭酒) through Lee Yuen Cheung Co. Ltd. (利源長有限公 司), its sole distributor in Hong Kong from 1972 to 1995. As at the relevant dates, the suit marks had been used in Hong Kong by the Registered Proprietor for 16 years. (b) The Zhong Yan Brand TZEPAO SANPIEN Wine (中亞牌至寶三鞭酒) was brought to the Hong Kong market by the Registered Proprietor as its products dating back to at least 1972. All along, the consumers in Hong Kong had been told that the Registered Proprietor was the party which “經營”, “handle” and “supervise the production of” the Zhong Ya Brand TZEPAO SANPIEN Wine (中亞牌至寶三鞭酒). The Registered Proprietor had been perceived by the public as being responsible for the character or quality of the wine and it was its reputation that the purchasers would place reliance. With the consent and knowledge of the Applicant, the Registered Proprietor applied for registration of the suit marks in Hong Kong in 1988 and obtained registration thereof. In the circumstances, the hearing officer held that the Registered Proprietor is the owner of the suit marks as it was the party whose connection with the wine was indicated by the use of the suit marks. The suit marks had been used by the Registered Proprietor to indicate and identify the Zhong Ya Brand TZEPAO SANPIEN Wine (中亞牌至寶三鞭酒) coming from it in the Hong Kong market. It follows that the Applicant has failed to discharge the burden of proof to show that the Registered Proprietor was not the rightful proprietor of the suit marks. The Applicant failed in its main ground for rectification. (c) As a subsidiary and alternative ground to the proprietorship ground, the Applicant argued that the suit marks should be expunged from the register as the use of the suit marks by the Registered Proprietor on wine produced from a producer different from the Applicant would be likely to deceive or cause confusion. In the hearing officer’s view, this ground is bound to fail as well. As the hearing officer has found that the medicinal wine had been sold in Hong Kong under the suit marks to indicate a connection in the course of trade with the Registered Proprietor, the Applicant cannot stop the Registered Proprietor from getting the very same goods made in Yantai or elsewhere by other parties and selling it under the suit marks. The Applicant had never been known to the customers in Hong Kong to be the manufacturer of the medicinal wine in the twenty year period from 1972 to 1992, the use of the suit marks by the Registered Proprietor on wine produced from a producer different from the Applicant would not be likely to deceive or cause confusion. The Applicant also failed in its subsidiary and alternative ground for rectification.